The title plays a major role whether it’s a film, a novel, an album, or some other specific creative works. The title is what allows the viewer to acquire a sense of identity. The title is one of the first pieces of information the audience receives about the creative work content. It is with the title that creative work is been identified and thus we can imagine as to how important a title is to creative work. Since the title is so important, do you think it is entitled to Copyright or Trademark protection? Initially, the answer is No.
The logic behind this is, Copyright shall subsist in original literary, dramatic, musical & artistic works, cinematograph films, and sound recordings. This means that the creative work, on the whole, is protected under the copyright act but the title in itself is not granted protection and the reason being that the title cannot be considered as a literary work because titles are generally small and lack originality as pronounced in the Supreme court case of Krishika Lulla and Ors. v. Shyam Vithalrao Devkatta and Anr on 15 October. 2015.
In the case of the Trademark Act, The Trademark is a source identifier, and the title of the creative work serves to identify only the creative work and not the source. And also, the Trademark has to be distinctive to qualify under trademark. This means that a trademark cannot be granted if the word is generic or descriptive to avoid monopoly on that respective word. [i]
But if neither Copyright protection nor Trademark protection is granted to the title of the creative works, then anyone can infringe and take away the title of other person’s creative work and ride on their goodwill and reputation? To avoid that, exceptions have been made to grant protection to the title of the creative work under the Trademarks act.
Protection of titles under Trademark law
The protection to the title of the creative work under Trademark law can only be granted in the following cases where,
· The titles of series of literary works
In other words, the creative work is serialized. Titles of series of books, newspapers, magazines, Television series, Movies do function as a trademark to indicate that each edition comes from the same source as the others and, therefore, such titles are registrable as a trademark. For eg Magazines like Filmfare (Application no. 1341174), India Today (Application no. 1343803), etc. and movies like Dhoom (Application no. 1319835), Golmaal (Application no. 2062866). Such ‘series titles’ enjoy the same protection as a usual trademark.
· Titles of single literary works
Titles of single literary works can be granted the protection where it is demonstrated that the title of the single creative work has acquired a secondary meaning also known as acquired distinctiveness implying that the title has acquired significance amongst the general public. The assumption behind this is the possibility of confusion that may arise in the minds of the general public with the title of the single literary work and can be contended only if the title has acquired a secondary meaning and can associate itself with a particular creative work.
For example, The movie named ‘Gully Boy’ is granted trademark registration (Application no. 4097074) Proprietor: Excel Entertainment Pvt. Ltd.
Even if the creative work is not released, if a sufficient amount of pre-released publicity is attained by the title and the title has acquired recognition amongst the general public, it is sufficient for protection.[ii]
Does having registration of title of creative work means the protection shall be granted?
The answer to this question is not necessarily. In case of movies, apart from the registration of the title of the movie under the trademarks act, they are also registered with any authorized associations like Association of Motion Pictures & Television Programme Producers (AMPTPP), Indian Motion Picture Producers Association (IMPPA), Western India Film Producers Association (WIFA), The Film & Television Producers Guild of India (GUILD), etc. These associations are actively working with the motive to promote and encourage film productions and protect the commercial interest of movies. By being a member of any of these associations, one can register their title and script of the movies. Before registering the title in any of these associations, a thorough check is conducted with various other organisations to check whether an identical or deceptively similar title has been registered or not.
However, such registration with these associations shall not affect a legal proceeding. It can only help to prove as to whether one is a prior adopter of the title or not.[iii]
This was stated by Madras High Court in the case of M/S Lyca Productions v. J. Manimaran and ors. 22 February 2018. The court concluded that the title registration scheme was purely on a self-regulatory basis which stated that it will not have a legal effect. The court also held that the registration of titles with film associations was not a ‘Trade practice’ which will grant legal protection to the title in court.[iv]
The protection for the title can be granted only when one of the two conditions is satisfied-
(i) The work is serialized,
(ii) when the title has attained secondary meaning.
Mere registration of title in the Trademark act doesn’t mean protection of the title will be granted.
This was noticed in the below-mentioned case:
- Kanungo Media Pvt. Ltd. V. RGV Film Factory, also known as Nishabd case
The plaintiff produced a Bengali film titled ‘Nishabd’ and the title was registered under the trademark act (Application no. 1527777) but it wasn’t released commercially due to paucity of funds but won various awards at film festivals. Later on, the defendant also produced a Hindi movie with the same title ‘Nishabd’. It was stated by the Delhi High court that only when a film’s title has attained a secondary meaning, the trademark can be protected and it was held that the plaintiff’s movie had not acquired a secondary meaning in the eyes of the general public whereas on the other hand the Hindi film of the defendant had acquired a public recognition because of the wide promotion, and thus the defendant released the Hindi film with the title ‘Nishabd’. This case has proved that even though registration has been granted, full protection cannot be assured until a secondary meaning has been obtained.[v]
The title of creative work is as important as the creative work itself because it is the title that gives the identity to the work. The registration of the title of the creative work in the trademark act does not mean the protection shall be granted, for protection under trademark act, one of the two conditions shall be satisfied that is either (1) creative work is serialized, or (2) the title of the single creative work has acquired secondary meaning. And it will grant the owner exclusive and sole right over the title of the creative work.